USPTO Issues Interim Rules on CREATE Act

The United States Patent and Trademark Office (Office) is revising the rules of practice in patent cases to implement the Cooperative Research and Technology Enhancement (CREATE) Act of 2004. The Interim Rules take effect on December 10, 2004 and written comments must be received on or before February 10, 2005. No public hearing will be held.

According to The Patently Obvious Blog, "The Bar Association of the District of Columbia PTC Section roundtable that will be held at 3:30 PM EST on January 12 will discuss the changes. A telephone hookup remains available for that meeting. For information on either personal attendance or about the telephone hookup, please contact Jean Shim, jshim@foley.com, who is the registrar for this meeting. The meeting will be held at Suite 500, 3000 K Street NW in Georgetown. (Thanks to Hal Wegner for information on the meeting)."

The CREATE Act amends the patent laws to provide that subject matter developed by another person shall be treated as owned by the same person or subject to an obligation of assignment to the same person for purposes of determining obviousness if three conditions are met:

1. The claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made;
2. The claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
3. The application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.

According to the Interim Rules, in order to overcome a rejection under 35 U.S.C. 103(a) based upon subject matter (whether a patent document, publication, or other evidence) which qualifies as prior art under only one or more of 35 U.S.C. 102(e), (f) or (g) via the CREATE Act, the applicant must provide a statement to the effect that the prior art and the claimed invention were made by or on the behalf of parties to a joint research agreement within the meaning of 35 U.S.C. 103(c)(3), and that the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement. The statement must be or begin on a separate sheet and must not also be directed to other matters (§ 1.4(c)). The statement must be signed either by the applicant or by the assignee of the entire interest (as provided for under §3.71(b)).

In addition to providing a statement, the applicant must also: (1) Amend the specification to disclose the names of the parties to the joint research agreement; and (2) either amend the specification to either set forth the date the joint research agreement was executed and a concise statement of the field of the claimed invention, or specify where (i.e., by reel and frame number) this information is recorded in the assignment records of the Office. If the applicant disqualifies the subject matter relied upon by the examiner in accordance with 35 U.S.C. 103(c) as amended by the CREATE Act and the procedures set forth in this interim rule, the examiner will treat the application under examination and the 35 U.S.C. 102(e), (f), or (g) prior art as if they are commonly owned for purposes of 35 U.S.C. 103.

35 U.S.C. 103(c), as amended by the CREATE Act, continues to apply only to subject matter which qualifies as prior art under 35 U.S.C. 102(e), (f) or (g), and which is being relied upon in a rejection under 35 U.S.C. 103. If the rejection is anticipation under 35 U.S.C. 102(e), (f), or (g), 35 U.S.C. 103(c) cannot be relied upon to disqualify the subject matter in order to overcome the anticipation rejection.

Because the CREATE Act applies only to patents granted on or after December 10, 2004, the recapture doctrine may prevent the presentation of claims in reissue applications that had been amended or cancelled (e.g., to avoid a rejection under 35 U.S.C. 103(a) based upon subject matter that may now be disqualified under the CREATE Act) during the prosecution of the application which resulted in the patent being reissued.